"EVADE OFFSHORE ARMOR (Stylized)" Mark Survives Under Armour's Section 2(d) Attack

[Caveat: Yours Truly represented Defendant Evade LLC in this consolidated proceeding, and so editorial wise-crackery will be kept to a minimum]. The Board dismissed Under Armour's petition for cancellation of a registration for the mark EVADE OFFSHORE ARMOR (Stylized) (shown below), for "shirts, hats, visors, sweatshirts, jackets, shorts in the field of fishing," finding the mark not likely to cause confusion with Under Amour's registered marks UNDER ARMOUR and ARMOUR for various clothing items. However, as to Defendant's registration for the mark EVADE OFFSHORE ARMOR and its application for EVADE OUTDOOR ARMOR, both in standard character form, the Board found the marks confusable with Plaintiff's ARMOUR mark. Under Armour, Inc. v. Evade, LLC, Opposition No. 91195620 and Cancellation No. 92052716 (October 29, 2015) [not precedential], affirmed per curiam, Appeal No. 16-1531 (Fed. Cir. February 28, 2017).

OFFSHORE ARMOUR: Plaintiff UA claimed to own common law rights in the mark OFFSHORE ARMOUR, based on an assignment from a third party, executed [the assignment, not the third party - ed.] after the commencement of the proceedings. However UA failed to prove use of that mark prior to Evade's constructive first use dates, and so this contention went nowhere.

EVADE OFFSHORE ARMOR (Stylized): Evade did not contest the fame of the UNDER ARMOUR mark for clothing. Nor did it challenge the similarity of the goods, channels of trade, or classes of customers. The Board found that the mark UNDER ARMOUR is famous for Section 2(d) purposes, but UA did not establish that the mark ARMOUR is famous.

Evade contended that the impact of the shared term "armour" is diminished due to both its inherent weakness and the wide-spread third-party use of that term in connection with products having a "protective" feature. The Board, however, pooh-poohed that evidence: "it has not been shown that the same suggestive meaning is applicable in the context of the involved goods, namely, general articles of clothing or apparel for fishing."

Turning to the issue of the similarity of the marks, the Board first considered Evade's stylized mark versus UA's ARMOUR mark, noting that there is no need to consider the UNDER ARMOUR mark if no likelihood of confusion is found with respect to the ARMOUR mark. The Board had "little hesitation" in finding the marks to be "overall dissimilar" because the arbitrary word EVADE dominates the stylized mark: consumers will emphasize the EVADE portion of the mark and will pay less attention to the additional wording.

And so the Board dismissed the Section 2(d) claim against the Registration for the mark EVADE OFFSHORE ARMOR in stylized form.

EVADE OFFSHORE ARMOR (Standard Characters): The Board again considered the EVADE OFFSHORE ARMOR mark in comparison to UA's ARMOUR mark. The fact that Evade incorporates the ARMOUR mark "is significant and creates a scenario where a likelihood of confusion has frequently been found." The word "armour" is at most only slightly suggestive of common articles of clothing, and thus is not to be discounted in the analysis. Moreover, the word OFFSHORE is somewhat suggestive of clothing used for fishing.

The Board observed that EVADE is also defendant's name, and so "consumers familiar with this information may consider this as merely the addition of a trade name."

And so the Board concluded that EVADE OFFSHORE ARMOR, in standard character form, is confusingly similar to the mark ARMOUR, and it granted the petition for cancellation of that registration.

EVADE OUTDOOR ARMOR (Standard Characters): The Board noted that OUTDOOR is descriptive for clothing used in "outdoor" activities. Considering the marks in their entireties, and following the reasoning set forth immediately above, the Board found Evade's mark to be confusingly similar to the ARMOUR mark, and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Well, do you think the Board got this one right? Two-thirds right? Two-thirds wrong?

In an earlier ruling in this case, the Board dismissed UA's dilution claims directed at Evade's two registered marks, ruling that the claims were barred by the (now non-existent) "federal registration defense." TTABlogged here.

Text Copyright John L. Welch 2015.

Precedential No. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs.BOSTON MARATHON

The Board dismissed this Section 2(a) opposition to registration of the mark MARATHON MONDAY for various clothing items, ruling that applicant's mark does not falsely suggest a connection with Opposer's name or identity. Boston Athletic Association v. Velocity, LLC, 117 USPQ2d 1492 (TTAB 2015) [precedential].

To establish a claim of false suggestion of a connection under Section 2(a), Opposer BAA had to prove "(1) that MARATHON MONDAY is, or is a close approximation of, Opposer’s name or identity,as previously used by it or identified with it; (2) that Applicant’s mark, MARATHON MONDAY, would be recognized as such by purchasers of Applicant’s goods, in that it points uniquely and unmistakably to Opposer; (3) that Opposer is not connected with the goods that are sold or will be sold by Applicant under its MARATHON MONDAY mark; and (4) that Opposer’s name or identity is of sufficient fame or reputation that when used by Applicant as a mark for its goods, a connection with Opposer would be presumed."

Opposer attempted to show that the name of the race, BOSTON MARATHON, identifies the entity known as the Boston Athletic Association, or BAA, and that MARATHON MONDAY is a close approximation of BOSTON MARATHON. There was no dispute that the term "Boston Marathon" is well-known as identifying a marathon taking place annually in Boston, Massachusetts, for the past 117 years on the third Monday in April. "Given the magnitude and longevity of the event," the Board found that the Boston Marathon "is so well known that it is inevitable that over the course of more than a century, it has been associated with its organizer, the BAA." Even if the public does not know the name of the entity that organizes the race, they will understand that "an alternative name represents the association." [Citing In re Urbano, finding that although the Olympic Games, per se, are not an "institution," SYDNEY 2000 falsely suggested a connection with the Olympic Games taking place that year in Sydney, Australia].

The Board therefore found that "Boston Marathon" is perceived as a name or identity of the Boston Athletic Association.

However, the evidence failed to show that MARATHON MONDAY is a close approximation of BOSTON MARATHON. To prove such proximity, the similarity between the terms must be "akin to that required for a likelihood of confusion under Section 2(d)." The Board concluded that, although both marks include the common word "marathon," the applied-for mark is not a close approximation of MARATHON MONDAY.

Nor did MARATHON MONDAY directly qualify as the identity of identify Opposer BAA. Although there was evidence of the BAA's use of "Marathon Monday" to identify its race, there was insufficient evidence to establish that the public recognizes that term as identifying "not merely the race, but the entity that organizes the race."

In other words, the fact that the Boston Marathon is annually held on the third Monday in April may be generally known by the consuming public, but it has not been shown that MARATHON MONDAY is a recognized name or identity of the commercial entity responsible for the Boston Marathon.

Thus BAA's claim failed under the first prong of the Section 2(a) test.

Turning to the second prong, the BAA also failed to show that MARATHON MONDAY points uniquely to the BAA. Applicant's evidence established that other entities use "Marathon Monday" to refer to other marathons, including the ING New York City Marathon, or to refer to the Monday after a marathon. In light of this evidence, the Board concluded that the term MARATHON MONDAY does not point uniquely and unmistakably to Opposer BAA.

Finding it unnecessary to analyze the third and fourth prongs of the Section 2(a) test, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Where do you think Velocity sells its goods?

Text Copyright John L. Welch 2015.

TTAB Grants Petition to Cancel MEN'S DIVORCE Supplemental Registration for Legal Services

In an rare situation, the Board faced the question of whether the owner of a merely descriptive term may cancel a Supplemental Register registration for the same term. The Board granted this petition for cancellation of a Supplemental Registration for the mark MEN'S DIVORCE for legal services, finding the mark likely to cause confusion with the previously used but unregistered mark and trade name MEN'S DIVORCE LAW FIRM for divorce and family law services. Respondent admitted that the marks are confusingly similar, and so the question came down to priority. The Board found that petitioner was the first to use its mark in the manner of a source indicator. Jeffrey Feulner, P.A. v. Cordell Practice Management Group, LLC Cancellation No. 92056202 (October 26, 2015) [not precedential].

The Board distinguished Otto Roth & Co., Inc. v. Universal Foods Corp., 209 USPQ 40, 43 (CCPA 1981), which holds that a plaintiff "must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion." Otto Roth is limited to proceedings challenging registration on the Principal Register.

… the ruling on the merits in Otto Roth, in any event, is not controlling here. The Otto Roth opposer sought to prevent the applicant’s registration of an arbitrary mark on the Principal Register on the basis of prior use of a descriptive phrase. One who had proprietary rights in a mark was being attacked by a party who had established no rights in a mark on the ground that the applicant’s use would be attributable to opposer. In contrast, this case concerns a registration for a descriptive term on the Supplemental Register. The registrant here has as yet no proprietary rights in a mark …. The statute does not require the anomalous result that a junior user is entitled to keep its Supplemental Registration for a descriptive term in which it has not established secondary meaning (as evidenced by registration on the Supplemental Register) because a prior user cannot show secondary meaning in that term either. Books on Tape, Inc. v. Booktape Corp., 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)

In short, the Board ruled that petitioner here did not need to establish acquired distinctiveness in order to prevail.

Moreover, the Board stated (in dictum) that, even if Otto Roth were applicable, petitioner established acquired distinctiveness in Central Florida, where both parties offered their services. Assuming Petitioner’s mark is not generic (an issue not before the Board), petitioner had established "priority of acquired distinctiveness."

Read comments and post your comment here.

TTABlog comment: Makes sense to me. Otherwise it is too difficult to knock out a Supplemental Registration. Note that in petitioner's pending application, which was blocked by the challenged registration, it disclaimed "men's divorce."

Text Copyright John L. Welch 2015.

TTAB Test: Are "M WEBB" and "MAPPIN & WEBB" Confusable for Wallets and Purses?

M Webb, LLC applied to register the mark M WEBB for "handbags, purses, wallets, tote bags" and for various items of women's apparel, identifying "M Webb" as "Marissa Webb," whose consent was of record. Mappin & Webb opposed, claiming a likelihood of confusion with its previously used mark MAPPIN & WEBB for "jewelry" and for various Class 18 goods, including purses and wallets. The Board found the goods to be identical in part, and otherwise closely related. But what about the marks? How do you think this WEBB case came out, Charlotte? Mappin & Webb Limited v. M Webb, LLC, Opposition No. 91213413 (October 23, 2015) [not precedential].

Judge Bergsman provided a detailed opinion in this ACR proceeding, a good portion being devoted to an analysis of the similarity of the marks. The Board found opposer's mark MAPPIN & WEBB to be inherently distinctive, but having "little, if any, marketplace strength in the United States."

Of course, when the goods are in part identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Opposer pointed out that both marks begin wit the letter "M" and applicant's mark is encompassed by opposer's mark. The Board noted that in the fashion industry, designers are often referred to by their surnames alone.

Applicant argued that its mark denotes a single individual, and therefore its mark has a different meaning and commercial impression than opposer's mark. There was no evidence, however, that Marissa Webb is actually referred to as "M Webb." On the other hand, there was no evidence that opposer's mark is ever shortened to WEBB, M WEBB or M & WEB. "[T]he evidence regarding abbreviations for similarly structured trademarks is unpersuasive based on the relatively few relevant abbreviations and the obscure sources for some of those abbreviations."

Based on the uniqueness of MAPPIN and the familiarity of WEBB, consumers will not shorten or abbreviate Opposer’s mark to WEBB, M WEBB or M & WEBB. Rather, consumers will likely focus their attention on the MAPPIN element of the mark. The inclusion of the surname MAPPIN in MAPPIN & WEBB distinguishes the marks MAPPIN & WEBB and M WEBB as indicating different sources of goods.

The Board therefore found MAPPIN & WEBB and M WEBB to be more dissimilar than similar in terms of appearance, sound, connotation and commercial impression, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: So, how did you do?

Text Copyright John L. Welch 2015.

TTAB Finds CAROLINA'S SUMMER HUMMER Geographically Descriptive of Alcoholic Beverages

The Board affirmed a Section 2(e)(2) refusal of the mark CAROLINA'S SUMMER HUMMER, finding the mark primarily geographically descriptive of "alcoholic beverages, namely, distilled liquors and distilled spirits." Applicant contended that the SUMMER HUMMER portion of the mark is inherently distinctive, and therefore the mark is registrable on the Principal Register [with a disclaimer of CAROLINA?]. The Board disagreed, resulting in a SUMMER HUMMER BUMMER that dampened B&B Spirits. In re B & B Spirits, LLC, Serial No. 86081482 (October 21, 2015) [not precedential].

The taste test under Section 2(e)(2) has two prongs: (1) the primary significance of the mark is a generally known geographic place, and (2) the relevant public would likely believe that the goods came from that place. If the goods in fact come from the location named, a goods/place association may be presumed.

Prong 1: The Board found that "Carolina" is a well-known geographic abbreviation for two states. [Can you name them? - ed.]. A nickname or informal name for a place is the equivalent of the formal name for purposes of Section 2(e)(2). [Like Birthplace of Franklin for ... Guess what?] Use of the possessive form enhances the geographic meaning. Applicant did not dispute that Carolina is a geographic location.

Applicant contended that the term SUMMER HUMMER is inherently distinctive, and so its mark may be registered on the Principal Register. It asserted that "hummer" has a variety of meanings: one that hums, a hummingbird, a humdinger, or a fastball. When used for alcoholic beverages, said applicant, SUMMER HUMMER alludes to "a striking or extraordinary summer that results from the product, great summer memories, a great product for summer, a liquor that hits you as hard as a fastball, and so on."

The evidence submitted by Examining Attorney Andrea Koyner Nadelman, however, demonstrated that "summer hummer" is highly descriptive for applicant's goods. Various websites provide recipes for a "summer hummer" cocktail. Accordingly, some of the items in applicant's identification of goods may be "summer hummer ingredients." Therefore the presence of the term SUMMER HUMMER in the applied-for mark does not distract from the geographical significance of the mark as a whole.

Prong 2: Applicant is located in Monks Corner, South Carolina. Moreover, at least some of the goods will be sold in South Carolina. [so what? - ed.]. Therefore, because "Carolina" is a "generally known" place, a goods/place association is presumed. [Maybe Applicant B&B should try NEWBRIDGE SUMMER HUMMER - ed.].

And so the Board affirmed the Section 2(e)(2) refusal.

Read comments and post your comment here.

TTABlog comment: In the NEWBRIDGE CUTLERY case, the CAFC ruled that the USPTO had failed to satisfy the first prong of the applicable test: that the place named by the mark [Newbridge, Ireland] be generally known to the relevant consuming public. TTABlogged here.

Text Copyright John L. Welch 2015.

TTAB Test: Are "1-888-SU-ABOGADO" and "YOURLAWYER" Confusable for Legal Services?

Richard J. Eisner sought to register the mark 1-888-SU-ABOGADO for "legal services," but Examining Attorney Deborah Meiners refused registration under Section 2(d), finding the mark likely to cause confusion with the registered marks YOURLAWYER and YOURLAWYER.COM for legal services. Eisner provided a translation of "SU ABOGADO" as "YOUR LAWYER," but he argued that the marks differ in appearance and sound, and further that the consumers of legal services are sophisticated. How do you think this came out? In re Richard J. Eisner, Serial No. 85593854 (October 2, 2015) [not precedential].

Because the involved services are identical, a lesser degree of similarity is necessary to support a finding of likelihood of confusion. Even though the legal services of applicant and registrant may not be provided at different locations, they compete for the same customers through all normal channels for those services.

In order to determine similarity with English word marks, a foreign language mark is translated into English in accordance with the doctrine of foreign equivalents. That doctrine is applied when an ordinary American purchaser would stop and translate the word into English. [Some terms, like cordon bleu, or Tia Maria, would not be translated, but rather would be taken at face value].

Because the literal and direct translation of "su abogado" from Spanish to English is "your lawyer," the involved marks have highly similar meanings. The prefix "1-888" and the suffix ".com" have no source-identifying significance.

However, the Board must also compare the appearance and sound of applicant's untranslated mark with the two cited marks. Although there are several points of distinction in appearance and sound between the marks, the Board found that the near-identity in meaning outweighed those differences, such that the marks create the same overall commercial impressions.

The Board concluded that the first du Pont, the similarity of the marks, favored a finding of likely confusion.

Applicant Eisner pointed to a dozen registered marks containing the terms "your" and "lawyer," but all of them contained additional verbiage and thus were distinguishable from the marks involved here. Moreover, there was no evidence regarding use of the marks, and thus the probative value of this evidence was minimal. Likewise, evidence of third-party usage of toll-free numbers and domain names containing the terms "law" or "lawyer" was of little value absent evidence of the extent of use.

The Board agreed with applicant that the cited marks are highly suggestive. [Applicant sought a Supplemental Registration and one of the two cited registrations was on the Supplemental Register]. But YOURLAWYER.COM is registered on the Principal Register and is entitled to a presumption of validity under Section 7 of the Trademark Act. In any case even weak marks are entitled to protection against the registration of confusingly similar marks for identical services.

Finally, turning to applicant's "sophisticated customer" argument, the Board observed that its determination under Section 2(d) must be founded on consideration of the "least sophisticated purchaser" of the involved services. And even if ordinary consumers exercise care when shopping for legal services, careful consumers are not immune from source confusion when confronted with highly similar marks used in connection with identical services.

Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: The "stop and translate" approach to the doctrine of equivalents needs some explanation. I believe the idea behind the doctrine of foreign equivalents, as applied here, is that some Americans speak both English and Spanish (more than 30 million, actually), and they will recognize that SU ABOGADO means the same thing as YOUR LAWYER. Those bilingual people may be thinking that the services come from the same source, with the mark being used in both English and Spanish. When the involved foreign language is obscure, then the proportion of Americans who are likely to be confused is too small to worry about. [See, for example, the SUNRISE guitar pick case, involving the Hawaiian term "pukana la," and TTABlogged here].

The "relevant consumers" do not include those Americans who speak only Spanish, because those persons would not (and could not) translate the term into English. How many American consumers speak Spanish but not English?

Text Copyright John L. Welch 2015.

Concurrent Use Applicant Carves Out Utah For Its Restaurant Services

Concurrent Use Applicant El Taco Grande applied to register the mark shown below left, for "fast-food restaurants and take-out restaurant services," naming Registrant I-20, owner of the mark shown below right for "restaurant services," as an excepted user. Registrant feebly argued that Applicant could not prove use prior to the filing date of Registrant's underlying application, and in any event that any concurrent use registration issued to applicant should be limited to the Salt Lake City area. The Board ruled that applicant was entitled to a concurrent use registration for the entire state of Utah. El Taco Grande Mexican Food, LLC v.I-20 Hospitality, LP, Concurrent Use No. 94002497 (October 19, 2015) [not precedential].

El Grande Taco LLC was established in 2002 as the successor to a family business operated under that name since 1997. The husband remained the sole owners of the LLC. It operates restaurants in ten Utah locations, several falling beyond a 50-mile radius from Salt Lake City that Registrant proposed.

Registrant I-20 operates its restaurants only in the state of Texas. Its involved registration issue from an application filed on November 16, 2000.

As the applicant/plaintiff, El Taco Grande bears the burden of proof in this proceeding. It must satisfy the two conditions precedent to issuance of a concurrent use registration: (1) that its lawful concurrent use of the mark began prior to the filing date of registrant's underlying application; and (2) that confusion, mistake or deception is not likely to result from its continued use of its mark in its claimed territory.

First Condition - Lawful Concurrent Use: As to the first, primarily jurisdictional, factor, the only issue was whether El Taco Grande could rely on use of the mark by the predecessor family business from 1997 to 2002. The Board had no trouble concluding that El Taco Grande may claim a first use date in 1997. Registrant did not contest the good faith nature of the adoption of applicant's mark in 1997.

Second Condition - No Likelihood of Confusion: There was no argument that the involved marks would not likely cause confusion if used in the same geographic area. The disputed issue was whether a geographic restriction would eliminate the likelihood of confusion, and if so, what the appropriate boundaries for the restriction should be.

El Taco Grande wanted the entire state of Utah. I-20 wanted a restriction to the Salt Lake City metropolitan area, although acknowledging that applicant operated at least one restaurant outside that area. El Taco Grande in turn maintained that several of its restaurants are located beyond that area.

The Board concluded that likelihood of confusion can be avoided with an appropriate geographical restriction. "El Taco Grande and I-20 offer their services in different, non-contiguous states. They do not overlap in the areas where they promote their respective marks and appear unlikely to draw the same customers."

The Board ruled that the appropriate restriction for El Taco Grande encompasses the entire state of Utah. The Board took judicial notice that four of applicant's locations are outside the Salt Lake City metropolitan area.

And so the Board found that El Taco Grande "should continue to be able to use its mark throughout the entire state of Utah."

Read comments and post your comment here.

TTABlog comment: What happens if El Taco Grande opens a restaurant in California under its Beto's mark? Nothing, unless and until I-20 comes into the area. Think Dawn Donut and Whataburger.

Text Copyright John L. Welch 2015.

TTAB Test: Is "DIAMONDS IN THE TROUGH" Deceptive for Diamond-less Jewelry?

Tracy Boyle applied to register the mark DIAMONDS IN THE TROUGH & Design, shown below, for beaded bracelets and necklaces, and for retail services featuring same, but the Examining Attorney deemed the mark deceptive under Section 2(a) because Boyle's goods and services did not contain or concern diamonds. Boyle maintained that the phrase DIAMONDS IN THE TROUGH is a double entendre that creates the impression that her jewelry does not contain diamonds. How do you think this came out? In re Boyle, Serial No. 85741096 (October 15, 2015) [not precedential].

A mark is deceptive under Section 2(a) if: (1) it misdescribes the character, quality, function, composition, or use of the goods and/or services; (2) Prospective purchasers are likely to believe that the misdescription actually describes the goods and/or services; and 3) The misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods and/or services. A mark is deceptive even if only a portion of the mark is deceptive.

Applicant Boyle contended that DIAMONDS IN THE TROUGH is a clever play on the phrase "diamond in the rough," and therefore it was improper to consider the word "diamonds" in isolation. She insisted that her mark "uses an incongruous, unitary phrase with a very unique commercial impression that trumps any descriptive meaning of the word 'diamonds.'"

Applicant argues the Mark plays on the expression “diamond in the rough” to indicate, in a very unique and recognizable way, that the goods and services bearing the Mark are a rare and unique commodity. According to Applicant, “[t]o suggest that diamonds, a very high cost, valuable commodity, would be found in such a location is laughable, which is the Mark’s intent.”

The Board, however, was not amused. "[W]hen customers see the phrase DIAMONDS IN THE TROUGH used in Applicant’s Mark, they are likely to initially think of and visualize an animal feeding trough filled with diamonds. Such an image does not convey the absence of diamonds." Moreover, the depiction of a diamond (and seven smaller diamond designs) in applicant's mark confirms the impression that applicant's goods and services contain or involve diamonds.

Thus the first prong of the deceptiveness test was met.

As to the second prong, Boyle argued that even if the word "diamonds" misdescribes her goods and services, consumers will not believe the description in view of the overall commercial impression made by the mark. She asserted (without support) that "consumers encountering the design would certainly recognize the clever play on the expression 'diamond in the rough' and deduce that the word 'diamond' is not meant to indicated jewelry."

Examining Attorney Matthew G. Galan submitted evidence that jewelry is often comprised of diamonds, customers often seek out diamonds, and jewelry retailers extol and market the desirability of diamonds. [Doh! - ed.]

The Board concluded that the words DIAMONDS IN THE TROUGH would certainly bring to mind diamonds, particularly in light of the use of the plural "diamonds" and the prominent display of a large diamond in the center of the mark. Purchasers are therefore likely to believe that DIAMONDS IN THE TROUGH actually describes goods having diamonds and services relating to diamonds.

As to materiality, Boyle did not dispute that the presence of diamonds would make jewelry more desirable. The record was chock full of evidence supporting that conclusion. Therefore, the third prong of the test was met.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Looks like the Examining Attorney had the last laugh. Note that the goods are identified as "jewelry, namely bracelets and necklaces with and without crystals." What is the purpose of the phrase "with and without crystals." Is that a significant non-limitation?

By the way, wouldn't "Diamonds in the Trough" be a great trademark for diamonds? Maybe in the farm belt.

Text Copyright John L. Welch 2015.

Unpleaded Morehouse Defense Sacked by Terry Hoage Vineyards

Former NFL footballer Terry Hoage triumphed in this Section 2(d) cancellation proceeding aimed at a registration for the mark TH, in standard character form, for wines. The Board found the mark likely to cause confusion with Petitioner's previously used and registered mark TH & Design (shown below) for wine. Registrant's last minute Morehouse defense was a feeble Hail Mary pass that fell incomplete. Serine-Cannonau Vineyard, Inc. dba Terry Hoage Vineyards v. Viña Undurraga S.A., Cancellation No. 92053854 (October 16, 2015) [not precedential].

Although Petitioner owns a registration for its TH Design mark, it still had to prove priority (unlike in an opposition proceeding when the opposer relies on a registration). Here, Respondent relied on the priority filing date of its underlying Chilean registration, September 14, 2007. Terry Hoage testified that he began using the TH Design mark in 2004, thereby establishing priority.

With the goods being identical, the Section 2(d) question came down to the marks. The Board found the marks to be highly similar in sound, meaning, and overall commercial impression.

Although the letters in Petitioner’s mark are highly stylized, we find that consumers would recognize them to represent the initials "th," which Respondent did not dispute. In addition, Respondent’s mark is not limited to any particular display and could appear in stylization similar to Petitioner’s mark.

Respondent, in its two-page brief, asserted that Petitioner would not be damaged by the continued registration of its mark because Respondent owns a second registration, for the mark TH TERROIR HUNTER. That argument constituted a prior registration defense based upon Morehouse Mfg. Corp. v. J. Strickland & Co., 160 USPQ 715, 717 (CCPA 1969). The Morehouse defense (which may be asserted only in inter partes proceedings) "is based on the principle that an opposer or petitioner cannot be further 'damaged' within the meaning of the Trademark Act by registration of a mark for particular goods or services if the defendant owns an existing registration for the same or substantially identical mark for the same or substantially identical good." The defense is available when the existing registration is "for essentially the same mark for essentially the same goods or services as the challenged registration." [i.e., almost never - ed.]

Respondent had two major problems. First, it did not plead a Morehouse defense, nor was the issue tried by consent. Thus the defense was not available as a procedural matter. Second, in any case, the defense would not apply here because Respondent's two registered marks are not essentially the same.

Finding confusion likely, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: As I said in 2008, the Morehouse defense is about as useful as a one-legged man at an arse-kicking contest. It only applies when one already owns a virtually identical registration and therefore doesn't need another registration. Maybe it should be called the "Lesshouse defense" or the "Morehouse non-defense."

Text Copyright John L. Welch 2015.

TTAB Affirms 2(e)(3) Refusal of GRAN HABANO for Cigars

Snuffing out another Cuban cigar mark, the Board affirmed a Section 2(e)(3) refusal to register the mark GRAN HABANO, finding it to be primarily geographically deceptively misdescriptive of "cigars made from Cuban seed tobacco." Applicant submitted declarations from retailers, distributors, and consumers in support of its assertion that its customers are sophisticated and are not interested in Cuban cigars, but that arguing went up in smoke in light of Examining Attorney David C. Reihner's evidence. In Santa Cruz Tobacco Co., Inc., Serial No. 77129912 (October 13, 2015) [not precedential].

Applicant translated the subject mark as "Grand Havanan," and it did not deny that Havana, Cuba is a well-known geographic location. Instead, it argued that its customers will not not translate the mark into English, and that the term “habano” has another, non-geographic meaning. The Board noted, however, that applicant’s goods are directed to the general adult population, and that the Spanish speaking population in the United States is large (probably more that 13%). The Board concluded that a substantial portion of consumers of applicant’s goods will "stop and translate" the mark. And though "habano" may have another meaning (a type of cigar wrapper), its primary significance is geographic.


Applicant is a cigar manufacturer located in Miami, Florida, with manufacturing facilities in Honduras, Nicaragua, Colombia and other Central and South American countries. The only connection between applicant's goods and Cuba or Havana is that "Applicant's tobacco seed is descended from the original tobacco seed grown in Cuba prior to the Cuban Revolution in 1962." The Board, however, has previously ruled that this connection is too tenuous to establish Cuba or Havana as the “origin” of the goods.

A goods/place association between cigars and Cuba was established by evidence that Cuba is "highly regarded for its premium cigars, which are often manufactured in or near Havana." Applicant, relying on declarations from 13 retailers and distributors and from twelve customers, maintained that its customers are sophisticated and are aware that applicant’s cigars do not originate in Havana or Cuba. The Board pointed out, however, that applicant’s identification of goods does not limit applicant's customers to those who are sophisticated, but rather includes all consumers of “cigars made from Cuban seed tobacco,” any or most of whom will be aware of the renown of Cuban cigars, often associated with Havana.

As to applicant’s assertion that consumers are aware of the United States embargo on Cuba and the inability of United States consumers to purchase Cuban cigars, Board precedent has already made clear that “such policy measures must not influence our findings.”

Finally, as to materiality, the question was “whether the misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services.” In re Spirits International, N.V., 90 USPQ2d 1489, 1490-95 (Fed. Cir. 2009). The evidence was clear that U.S. consumers “associate high quality cigars and tobacco with Cuba and Havana.” The Board recognized that some cigar consumers do not prefer Cuban tobacco. However, as noted, the customers for applicant’s identified goods are not limited to the subset represented by applicant’s declaration evidence. “[T]here is strong evidence of record that Havana, Cuba is associated with highly-desirable premium tobacco products including cigars, which, as noted, creates a presumption of materiality for purchasers.” Applicant did not rebut that evidence.

And so the Board affirmed the refusal to register

Read comments and post your comment here.

TTABlog comment: How big is that subset of relevant consumers who do not care about or for Cuban cigars? What do you think a survey of cigar smokers would show?

Text Copyright John L. Welch 2015.

Current Roster of TTAB Administrative Trademark Judges

The recent appointments of David K. Heasley and Cynthia C. Lynch to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board, brings the Board’s membership to twenty-five (25) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and Deputy Chief Judge Susan M. Richey, and then proceeding alphabetically.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Richey, Susan M. (Deputy Chief Judge): Appointed to TTAB in 2014; Prior Professional Experience: Professor and Associate Dean, Univ. of New Hampshire School of Law, 1996-2014; Private practice (Los Angeles, California, 1983-1996); Education: B.A., University of Baltimore; B.S., College of William and Mary; J.D., University of Maryland.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Bucher, David E.: Appointed to TTAB in 1998; Prior Professional Experience: Trademark Examining Attorney; Senior Examining Attorney; Legislative Assistant, Office of U.S. Senator Paul Simon; Director, Trademark Examining Organization; Deputy Assistant Commissioner for Trademarks; Education: B.A., Eastern Mennonite University; J.D., George Washington University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Goodman, Cheryl S.: Appointed to TTAB in 2014: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles, California); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice for more than three decades, including with Silverberg, Goldman & Bikoff, and more recently with Smith, Gambrell & Russell; Education: B.A., The Johns Hopkins University: J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Trademark Examining Attorney; Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Quinn, T. Jeffrey: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Seeherman, Ellen J.: Appointed to TTAB in 1987; Prior Professional Experience: Private Practice (New York, NY); Trademark Examining Attorney; Staff Assistant, Special Assistant to the Assistant Commissioner for Trademarks; Education: A.B., Brandeis University; J.D., New York University School of Law.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.


Text Copyright John L. Welch 2015.

TTAB Test: Is "MAC NET WIRELESS MONITORING" Confusable With "MAXNET" For Same Services?

The USPTO issued a Section 2(d) refusal of the mark show immediately below, for "wireless monitoring for fire alarm and security systems" [NET WIRELESS MONITORING disclaimed], finding it likely to cause confusion with the registered mark MAXNET for"central station alarm monitoring services." The services overlap and are therefore legally identical. But what about the marks? How do you think this came out? In re Mac Systems, Inc., Serial No. 86184962 (September 29, 2015) [not precedential].

There was no dispute that applicant and registrant offer alarm monitoring services, registrant's "central station alarm monitoring" services encompassing applicant's services. There are no restrictions on the channels of trade or classes of consumers for the involved services.

As to the marks, the panel majority found the differences in the marks to be "crucial." The majority rejected the examining attorney's contention that MAC NET is the dominant feature of applicant's mark. The antenna design "certainly is visually very prominent," and is integrated with the terms MAC and NET. The antenna may be understood as representing the letter "I" and applicant's mark may be read as MACINET. [Really? That never occurred to me or, apparently, to the applicant. - ed.]. The antenna is "such a significant element of the mark" that neither the words nor the antenna design dominates the mark in terms of overall impression.

The majority concluded that the marks are more dissimilar than similar. The marks are "quite different in appearance," and some consumers may perceive applicant's mark as MACINET. The disclaimed wording WIRELESS MONITORING is another difference. The marks sound "similar," but the additional wording and the possible interpretation of the antenna as the letter "I" contribute to some difference in sound.

And so the Board reversed the refusal to register.

Judge David Bucher dissented "vigorously." The majority acknowledged that when the involved services are legally identical, a lesser degree of similarity between the marks is required for a finding of likely confusion. However, it did not recognize that MAC NET and MAXNET are the portions of the marks that will be used by consumers when calling for or discussing the respective services. Slight differences in pronunciation, connotation, and commercial impression do not ordinarily justify a finding that confusion is not likely.

I find it most confounding that something as ubiquitous as a wireless icon would be seen as serving a source-identifying role for wireless monitoring services. Even more egregious is the reach by the majority, on its own initiative, to insert at multiple crucial points into the heart of its determination, the possibility that this icon could be perceived as the letter “i” – an argument happily never ventured by Applicant on its own behalf. [Emphasis in original].

Judge Bucher would "readily find herein a likelihood of confusion."

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015.

Precedential No. 38: Fame of "will.i.am" Can't Save "I AM" Trademark Applications From 2(d) Bar

In three separate opinions, the Board affirmed Section 2(d) refusals to register the mark I AM for cosmetics and personal products in class 3, for sunglasses and sunglass cases in class 9, and for jewelry, watches, and other goods, including "rubber wristbands in the nature of bracelets" in class 14, "all associated with William Adams, professionally known as will.i.am," in view of the registered marks I AM for perfume, I AM (Stylized) for sunglasses and jewelry, and I AM for "silicone stretchable wrist band in the nature of a bracelet." In re i.am.symbolic, llc, 116 USPQ2d 1406 (TTAB 2015) [precedential].

William Adams, known as "will.i.am," became well-known as a member of the musical group, The Black-Eyed Peas. Applicant, his assignee, maintained that there was no likelihood of confusion because its marks identify its founder, "will.i.am," its goods are exclusively associated with him, the goods under the cited marks are marketed differently, and the cited marks are not famous.

Regarding the language in the applications that the goods are all "associated with William Adams, professionally known as 'will.i.am,'" the Board did not find that to be a meaningful limitation on the goods, the trade channels, or the classes of consumers. The language is merely "precatory" and not binding on consumers when they encounter the applied-for mark. Purchasers are unlikely to know of the statement in the registration that applicant's goods are limited to those associated with Mr. Adams.

Applicant contended that the applied-for mark will be perceived as identifying Mr. Adams, but the Board pointed out that mark is I AM, not WILL.I.AM. The evidence did not establish that Mr. Adams is widely known as "i.am," or that "i.am" and "will.i.am" are used interchangeably by Mr. Adams or the public.

Moreover, even if Mr. Adams were known as "i.am" and even if the applied-for mark had gained notoriety, the Trademark Act still protects the senior user from "adverse impact due to use of a similar mark by a newcomer" - i.e., reverse confusion.

The language in the identification of goods simply is not a reasonable basis to assume that purchasers would be able to distinguish the source of such goods from those emanating from the prior Registrant. As we view it, the language essentially is a distinction without a difference for purposes of our likelihood of confusion analysis.

The differences in the way applicant's goods and the goods of the cited registrations are marketed are, of course, irrelevant, since the Board must make its Section 2(d) determination based on the goods as identified in the application and the registration. Here there were no limitations in that regard.

Finally, as to the asserted lack of fame of the cited mark, the Board observed that, given the nature of the evidence required to prove fame, an examining attorney is not required to establish the fame of a cited mark. In an ex parte context the factor of fame is normally treated as neutral.

Balancing the pertinent du Pont factors, the Board found confusion likely and it affirmed all three refusals.

Read comments and post your comment here.

TTABlog comment: Applicant's only chance was to sell the "fame" concept, but celebrity fame doesn't work. See, for example, the RINGO case, TTABlogged here, and the KUTT KALHOUN case, TTABlogged here. Some people refer to these as "noisufnoc" cases, i.e., reverse(d) confusion. Just plug "reverse confusion" into the TTABlog search engine and see what you get.

What if applicant's mark had been "I AM by will.i.am"? Probably same result, I think.

BTW, I'm counting these three decisions as one precedential ruling, since the opinions are to a large extent identical.

Text Copyright John L. Welch 2015.

Rifle Barrel Configuration Unregistrable Due to Functionality, Says TTAB

The Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, for "rifle barrels, rifles," finding the proposed mark to be (de jure) functional. The mark comprises the configuration of external helical fluting on a gun barrel. Applicant owns two relevant patents, one utility, one design. Applying the four-factor test of Morton-Norwich, the Board found the former more significant than the latter. In re E.R. Shaw, Inc.., Serial No. 85797528 (September 29, 2015) [not precedential].

In applicant's utility patent for a "Fluted Gun Barrel," internal and external spiral grooves produce a lighter gun barrel and permit the gun to cool more quickly. The internal and external fluting is included in the patent claims, and they are an "integral part of the invention." Although the patent is directed to the combination of internal and external fluting while the subject trademark application involves only the external fluting, the grant of trademark registration here would prevent others from practicing the invention, even after the patent expired.

Applicant argued that the existence of the design patent "presumptively indicates that the [applied-for mark] is not de jure functional," citing the the CAFC's decision in In re Becton, Dickinson. The Board pointed out, however, that the "mere existence of a design patent is not dispositive and may be outweighed by other evidence."

The Board considered the design patent, but ultimately found its probative value outweighed by other evidence, including the utility patent.

[A]lthough the spiral lines on the gun barrel are described as "ornamental" in the design patent and may be aesthetically pleasing, the question remains whether, on balance, this design is merely incidental to the overall purpose of the article or whether it "adopts a significant portion of the invention disclosed in the [utility] patent."

Here, the Board found that the proposed configuration mark is a "significant portion" of the invention described in the utility patent. Therefore this Morton-Norwich factor supports a finding of functionality.

In its advertising, Applicant mentions a "unique appearance" to the fluting, but it also asserts the same utilitarian advantages identified in the patent. [Couldn't the fluting be both unique in design and utilitarian at the same time? Is the Board mixing up de jure and de facto functionality here? - ed.].

The existence of alternative designs is probative, but "does not detract from the functional character of the product design where the subject matter sought to be registered is 'the preferred or a superior design.'" [Note that applicant is not trying to register as a trademark, all spiral designs, and there seemed to be no evidence that its particular spiral design was the preferred design. Surely one could imagine a design for the fluting - say, lighting bolts - that would perform the function (i.e., be de facto functional, but not be the preferred design (i.e., not be de jure functional) - ed.]

Helical fluting, the Board found, was clearly superior to the other fluting designs in the record: straight flutes, pocked indentations, or other grooves.

Applicant's spiral fluting may be more expensive to produce than, say, straight fluting, "but the fact that other designs are simpler and cheaper to make does not weigh very much in applicant's favor."

The Board concluded that the the applied-for configuration mark "comprises matter that, as a whole, 'is essential to the use or purpose of the article or ... affects the cost or quality of the article,' as contemplated by Inwood, and thus is functional and not registrable on that basis."

Read comments and post your comment here.

TTABlog comment: How does this case differ from the Hershey case (here), in which the scoring on a Hershey bar [plain, not with almonds], despite the existence of a utility patent on candy bar scoring. There are surely other ways to include spiral fluting on a gun barrel, like my lightning bolt example. Or suppose every other spiral line was much thicker than the adjacent lines, creating an eye-catching pattern. Could that not be registrable as a trademark? Maybe the hurdle for proving acquired distinctiveness might be high, and maybe the scope of protection would be narrow, but would it be de jure functional?

I am campaigning to revive the use of the terms de facto and de jure functionality, because I think they help clarify the analysis under Section 2(e)(5). See my TTABlog post here.

Text Copyright John L. Welch 2015.

Another TTAB Test: Are "FLUFF IT UP" and "FLUFFY STUFF" Confusable for Cotton Candy?

After yesterday's "F-bomb"-filled post, it's good to return to a more family-oriented discussion. [No - not the Manson family]. Tootsie Roll opposed registration of the mark FLUFF IT UP for "natural cotton candy," alleging likelihood of confusion with its registered marks FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS, both for cotton candy [COTTON CANDY POPS disclaimed]. The parties invoked the Accelerated Case Resolution (ACR) procedure, stipulating to standing and priority, as well as to a number of pertinent facts. Applicants argued that their cotton candy is hand-made from natural ingredients, and sold at weddings, fairs, and other events, rather than in grocery, drug, and convenience stores. Also, they maintained, the mark CHARMS always appears adjacent FLUFFY STUFF on Tootsie's goods. How do you think this came out? Tootsie Roll Industries, LLC v. Keelen and Breckenfeld, Opposition No. 91212895 (October 5, 2015) [not precedential].

The Board focused only on Opposer's FLUFFY STUFF mark, for obvious reasons. Tootsie Roll's cotton candy contains artificial flavors, chemical preservatives, and food coloring, while Applicants' natural cotton candy is of "artisan quality." The Board, however, pointed out for the umpteenth time that it must make its Section 2(d) determination in light of the goods as identified in the opposed application and cited registration, regardless of actual marketplace conditions. Here, opposer's "cotton candy" encompasses "natural cotton candy," and thus the involved goods are legally identical. This du Pont factor weighed heavily in Tootsie Roll's favor.

Moreover, there are no limitations as to channels of trade or classes of consumers in either the opposed application or the cited registration, and since the goods are legally identical, they must be presumed to travel in the same, normal channels of trade to the same classes of consumers. The specific differences in the actual channels of trade are irrelevant. This du Pont factor also weighed heavily in Tootsie Roll's favor.

Turning to the marks, the Board observed for the zillionth time that when the involved goods are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board pulled the two marks apart, examined and compared the pieces, and concluded that although the marks are somewhat different in sound, "the overall similarities in appearance and sound outweigh the differences." Moreover, the two marks have similar meanings, and "in their entireties engender similar overall commercial impressions."

Applicants' argument regarding the appearance of opposer's mark CHARMS on packaging for the goods was simply irrelevant. The Board must compare the mark shown in opposer's registration certificate to the mark shown in the application drawing. Likewise, difference in packaging, trade dress, and labeling are immaterial.

The involved goods are relatively low priced products clearly subject to impulse purchases. Purchasers would include ordinary consumers who would be expected to exercise no more than ordinary care in their purchasing decisions.

Finally, there were no other FLUFF or FLUFFY formative marks registered for cotton candy. [stipulated]. Neither FLUFF nor FLUFFY is descriptive for cotton candy. [stipulated]. Based on sales figures, opposer's FLUFFY STUFF marks are well-known. [Stipulated].

Balancing the relevant du Pont factors, the Board found confusion likely, and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: This case illustrates how the Board usually handles actual marketplace conditions in a Section 2(d) case: it ignores them.

Text Copyright John L. Welch 2015.

TTAB Test: Is "F**K PROJECT" Scandalous for Handbags and Clothing?

The USPTO refused registration of the mark shown below, for "Leather and imitations of leather; leather and imitation leather goods, namely bags, suitcases, backpacks, traveling bags, purses, key-cases of leather and skins, wallets, briefcases for documents; umbrellas" (in class 18), and "Clothing, namely, T-shirts, shirts, jumpers, trousers, skirts, jeans, jackets, underclothes, bathing suits, hats and caps, footwear" (in class 25), deeming the mark to be immoral or scandalous under Section 2(a) of the Lanham Act. Applicant Giorgio S.R.L. appealed, arguing that "f**k" is an accepted euphemism employed as a substitute for "fuck," the latter being too vulgar for use in written media. How do you think this came out? In re Giorgio S.R.L., Serial No. 79141996 (September 30, 2015) [not precedential].

The Board's opinion includes a main opinion, a concurring opinion, and a dissent, and runs for 22 pages That in and of itself makes this case rather extraordinary. I will hit only the high points here.

Judge Shaw wrote the main opinion, finding the applied-for mark to be immoral or scandalous and thus barred from registration by Section 2(a). Because this is a family blog, I will not repeat the dictionary definitions of "fuck" (you know them anyway), which established that the word "fuck" is considered vulgar and obscene. The examining attorney submitted Internet evidence showing that F**K is commonly used in place of "fuck," Therefore, "the former may be considered equivalent to the latter, particularly in meaning and commercial impression." The asterisks in F**K "serve as a typographical 'fig leaf' to protect readers from the visual vulgarity of the word 'fuck' but the terms are nonetheless equivalents."

Credulity was strained by applicant's argument that the term F**K could refer to an infinite number of socially acceptable words, such as "fork" of "flack." [How about FINK or FOLK? - ed.] Writers use asterisks in the term F**K precisely because the asterisks mask the vulgar appearance of the word 'fuck' in its entirety, while at the same time leaving no doubt in the reader's mind of the meaning."

Judge Adlin concurred, under different reasoning, noting that "if we were writing on a clean slate," he would join the dissent. In cases involving euphemisms or alternative spellings of "bad words," the Board has generally found these terms to be scandalous. He also noted that the PTO has been consistent in refusing registration of marks analogous to F**K PROJECT.

Unless and until a court or a larger panel of the Board adopts a new course in situations such as this, it is not appropriate to disturb the settled expectations resulting from the Office’s prior and relatively consistent treatment of this type of mark.

If serving on a larger panel, however, Judge Adlin would view the evidence as does the dissent. He would not agree that F**K is vulgar, but rather he would find it to be a euphemism used precisely because it is not vulgar. The evidence showed that "public, for-profit websites, and book, movie, and clothing sellers use alternative spellings of 'fuck' in an apparent effort to not offend, or at least to reduce the level of offense arising out of calling to mind the word 'fuck.'"

Judge Seeherman dissented, emphasizing that the mark at issue is not FUCK PROJECT, which she would find scandalous, but F**K PROJECT. The judge did not agree with the conclusion that if a term would be readily understood as offensive, a substitute term is also offensive.

In Judge Seeherman's view, F**K is a non-offensive way of depicting the word FUCK. "F**K is a sanitized version of the vulgar word 'fuck,' but because it is sanitized by the fig leaf asterisks, it should not be treated as being the same as the vulgar word that the fig leaf asterisks are obscuring."

At the very least, the record shows that there is some question about whether "f**k" would be perceived as an offensive or vulgar word, or as a euphemism for the offensive word “fuck.” This is enough to show that there is doubt as to whether the applied-for mark, F**K PROJECT in stylized form, is scandalous and, accordingly, such doubt should be resolved in favor of publishing the mark for opposition.

Read comments and post your comment here.

TTABlog comment: I've read enough F-bombs for one night, thank you. What do you think about the outcome?

Text Copyright John L. Welch 2015.

Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

The Board affirmed a refusal to register the product configuration shown below, comprising the arrangement of various components on a portable interface unit for "hot bonders," finding the purported mark to be functional under Section 23(c). The Board concluded that the "overall design of Applicant's configuration is 'essential to the use or purpose of the article'" [TrafFix] and therefore that the configuration as a whole is functional and not registrable. In re Heatcon, Inc., 116 USPQ2d 1366 (TTAB 2015) [precedential].

Heatcon sought registration of the design on the Supplemental Register, for "equipment for controlling and recording the application of heat and pressure in a process for fabricating bonded composite materials, namely, woven glass, aramid fibers and carbon fabric, and adhesives bonds to composite or metallic components." It described the mark as a "three dimensional configuration of the arrangement of the HCS9200M Composite Repair Set's (Hot Bonder's) user interface components."

Section 23(c) permits registration on the Supplemental Register, of a mark that "may consist of any ... configuration of goods ... that as a whole is not functional ... but such mark must be capable of distinguishing the applicant's goods or services." However, the Board observed, "the case law applying Section 2(e)(5) and addressing functionality prior to the 1998 amendments to the Trademark Act, which added Section 2(e)(5) and amended Section 23(c), remains equally applicable because the issue, functionality, is the same."

The Board applied that old favorite, the CCPA's Morton-Norwich test, in assessing functionality.

Under the first Morton-Norwich factor, a utility patent that claims the features of a product design is "strong evidence that those features claimed therein are functional." Third-party patents may be relied on as evidence; ownership of the patent is irrelevant. [i.e., no hearsay problem. But why not? - ed.]. Examining Attorney Tracy Cross cited a third-party utility patent for a "Portable Curing System for Use with Vacuum Bag Repairs and the Like," which claimed a carrying case and various components. She pointed out that both the patented device and Heatcon's unit locate "the display screen and printer opposite the power input port and vacuum connector ports [so that] [t]he operator can connect cords, cables and/or wires away from the user and avoid entangling the connections or hindering access to the other sensors, buttons and components of the panel."

Heatcon argued that the utility patent was irrelevant because the patent claims did not reference the arrangement of the components, and the patent figures showed "one possible arrangement of a virtually infinite number of possible arrangements." However, the Federal Circuit has pointed out that a utility patent may be relevant even though it does not claim "the exact configuration for which trademark protection is sought." A patent's specification "illuminating the purpose served by a design may constitute equally strong evidence of functionality." Citing In re Becton, Dickinson and Co.. [See comment below]. Here, the specification of the cited patent explained the utilitarian advantages of the particular arrangement of the features.

Figure from cited patent
The Board therefore found that the cited patent "discloses the utilitarian advantages of the various parts ... of an interface for a portable hot bonder. In view of the "strong weight" to be accorded patent evidence under TrafFix, the Board found the cited patent to be sufficient to establish a prima facie case of functionality. [Utility patent = game over - ed.].

As to the second Morton-Norwich factor, Heatcon's advertising references to "ergonomic design," "convenient hook up," and "circuit breakers on front panel" were probative as to the functionality of Heatcon's applied-for mark. Third parties touted Heatcon's display, and competitor's promoted the convenience of similar arrangements. The Board concluded that the advertising evidence supported a finding of functionality.

Turning to the third Morton-Norwich factor, Heatcon submitted several third party products as evidence of alternative designs. The examining attorney pointed out, however, that these designs do not necessarily provide the same utilitarian benefits of Heatcon's design: hot bonders lacking a raised display are not alternatives for hot bonders with a raised display, and single zone bonders that have a display screen on the side are not dual zone hot bonders. The examining attorney also pointed out that industry and safety standards play a role in the arrangement of the components for Heatcon's product.

Noting that there is no need to consider alternative designs if functionality is found based on other considerations, the Board concluded that the alternative examples proffered by Heatcon did not support a finding of non-functionality.

As to the fourth Morton-Norwich factor, there was insufficient evidence for the Board to make a determination as to the comparative costs of different designs. In any case, even if Heatcon's interface is not comparatively simple or inexpensive to manufacture (as Heatcon asserted), that does not mean that the design is not functional.

Heatcon argued that, although the arrangement of its interface is composed completely of functional parts, the arrangement by itself is not functional. Not so, said the Board.

[T]he functional features far outweigh any nonfunctional aspect of the arrangement which is incidental and hardly discernible as a separate element from the functional parts. While we do not foreclose the possibility, it is difficult to imagine a situation where the sum of a configuration’s entirely functional parts adds up to a design capable of indicating the source of the product. In any event, the case before us presents no such exception.

Moreover, the Board observed, even if it did not weigh the functional features against the asserted non-functional arrangement, the record established that "the arrangement of significant functional features is directed by utilitarian concerns to make the device easier, safer, and more efficient."

The Board concluded that the examining attorney satisfied her burden to make out a prima facie case. Heatcon failed to submit sufficient evidence to overcome that prima facie case by a preponderance of the evidence. It found that the "overall design of Applicant's configuration is "essential to the use or purpose of the article" [TrafFix and therefore the configuration as a whole is functional and not registrable.

The Board also affirmed a refusal to register on the ground of Applicant Heatcon's failure to comply with the examining attorney' requirement for a new drawing. Although the finding of functionality rendered the drawing issue moot, the Board chose to discuss the issue. It agreed with the examining attorney that, "in view of the functionality of the individual components, the requirement to depict them in broken lines is appropriate." It disagreed with Heatcon's assertion that such a depiction would be "unclear."

[T]o the extent it would be “unclear” the requirement to insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods is also appropriate.

Read comments and post your comment here.

TTABlog comment: Quite a job by Examining Attorney Tracy Cross in gathering evidence, don't you think?

The Board noted that, according to the TMEP, the terms de jure functional and de facto functional were "retired" at the USPTO in 2002. Apparently the CAFC did not get the message, since it used those terms, and explained the differences, in In re Becton, Dickinson and Co., 102 USPQ2d 1372 (Fed. Cir. 2012). I found those two terms useful in this March 2015 TTABlog posting entitled "Some Thoughts on de facto and de jure Functionality."

Text Copyright John L. Welch 2015.

CAFC Hears En Banc Oral Argument in THE SLANTS Appeal

On Friday, October 2nd, the CAFC heard oral argument en banc in in re Tam, the issue being whether "the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate[s] the First Amendment?" You too can hear the argument by going to this link and typing in the date of 2015-10-02 and the appeal number 2014-1203. Prior TTABlog postings regarding this case may be found here [TTAB], here [CAFC], and here [CAFC].

THE SLANTS
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Text Copyright John L. Welch 2015.

TTABlog Quarterly Index: July-September 2015

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Section 2(a) - Disparagement:

• E.D. Va. Affirms TTAB: REDSKINS Marks Found Disparaging of Native Americans

Section 2(d) - Likelihood of Confusion:

• Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools
• Precedental No. 33: North Face Gets Split Decision In Multi-Class Section 2(d) Opposition
• TTAB Test: Are Jams and Jellies Related to Beer for Section 2(d) Purposes? [Yes]
• Precedential No. 32: Orange Bang Wins "OLÉ" Section 2(d) Beverage Bullfight
• ASHCON Confusable With ASHCORE AND ASHCOLITE for Ash-Hauling Goods and Services, Says TTAB
• TTAB Test: Are Airline Services Related to Model Airplanes Under Section 2(d)? [Yes]
• Opposer Fails to Prove Acquired Distinctivess in MATTRESS OVERSTOCK, TTAB Dismisses Opposition
• TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• Yet Another TTAB Test: Must "CLUB" Be Disclaimed for Vehicle Reservation Services? [Yes]
• Another TTAB Test: Is PURPLE HAZE for Guitar Pickups Confusable With HAZE for Amplifiers? [Yes]
• TTAB Test: How Would You Decide These Four Recent Appeals?
• TTAB Test: Which Two of These Four Section 2(d) Refusals Were Reversed?
• Precedential No. 27: Fame of BUD for Beer Brings Victory over WINEBUD for Wine
• TTAB Test: Are "THE PERFECT FACE" and "PARFAIT VISAGE" Confusable for Skin Care Products? [No]
• WYHA?" LOVE IS MY RELIGION" Confusable With "LOVE IS RELIGION" for Clothing, Says TTAB
• TTAB Test: Are MAYARI and MAYA Confusable for Wine? [No]
• Forget Parody: GOTHAM BATMEN Confusable with Famous BATMAN, Says Split TTAB Panel
• TTAB Test: Which of These Four Section 2(d) Refusals Was/Were Reversed?
• Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal
• TTAB Test: Which One of These Four Section 2(d) Refusals Was Reversed?
• Precedential No. 16: MARAZUL and BLUE SEA Confusable for Seafood, Says TTAB

Section 2(e)(1) - Mere Descriptiveness:

• Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes
• TTAB Test: Which One of These Four Mere Descriptiveness Refusals Was Reversed?

Section 2(e)(1) - Deceptive Misdescriptiveness:

• Precedential No. 31: "THCTea" Deceptively Misdescriptive of Tea-Based Beverages, Says TTAB
• "INDICES" Not Deceptively Misdescriptive of Healthcare Data Reporting, Says TTAB

Section 2(e)(2) - Geographical Descriptiveness:

• TTAB Reverses Geographical Descriptiveness Refusal of MONTUSSAN for Wine

Section 2(f) - Acquired Distinctiveness:

• Teardrop Design Mark is Product Shape, Needs Acquired Distinctiveness, Says TTAB
• TTAB Deflates Feeble Attacks on SWISSBIKE Application and SWISS MILITARY Registration for Bicycles

Failure to Function/Specimen of Use:

• TTAB Test: Are Jams and Jellies Related to Beer for Section 2(d) Purposes? [Yes]
• TTAB Test: Which One of these Three Refusals Was Reversed?
• TTAB Test: Is This Display of "SmartDGA" Inherently Distinctive? [No]
• TTAB Precedential No. 25: "WALK-IN-SHOPPER" Not Used As Source Indicator for Applicant's Services
• TTAB Affirms Refusal of Deer Logo with "Phantom" Antlers, for Coffee, on Four Grounds

Genericness:

• TTAB Reverses Genericness Refusal of SKINSLEEVES, Finds Acquired Distinctiveness
  

Lack of Bona Fide Intent:

• Precedential No. 30: Finding Lack of Bona Fide Intent, TTAB Sustains SWISS GRILLS Opposition

Non-use:

• Finding Lack of Use in Commerce, TTAB Orders Cancellation of "ADD A ZERO" Registrations

Ownership:

• Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute
• Precedential No. 18: U.S. Seller, Not Foreign Manufacturer, Owns Trademark, TTAB Rules

Concurrent Use:

• Precedential No. 29: TTAB Dissolves Concurrent Use Proceeding, Plaintiff Fails to Prove Prior Use

Discovery/Evidence/Procedure:

• Eighth Circuit Directs District Court to Apply Preclusion in B&B v. Hargis
• Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile
• Precedential No. 26: TTAB Dismisses Opposition As Untimely, Denying Opposer Benefit of Another's Extension of Time
• Precedential No. 24: TTAB Summarily Dismisses Cancellation Petition Due to Claim Preclusion
• TTAB Grants Partial Summary Judgment in Cancellation Proceeding Based on Claim Preclusion
• Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice
• Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests
• Applying Claim Preclusion, TTAB Affirms 2(e)(1) Refusal of Re-filed RESTORE LIFT Application
• TTAB Deflates Feeble Attacks on SWISSBIKE Application and SWISS MILITARY Registration for Bicycles
• Precedential No. 19: PTO "Clear Error" Determination Not Reviewable by Petition or Appeal
• Precedential No. 17: TTAB Refuses to Vacate HOUNDSTOOTH MAFIA Decision

CAFC Decisions:

• CAFC Reverses TTAB: Paw Print Marks Not Confusingly Similar
• CAFC Affirms TTAB: FISH FRY PRODUCTS Lacks Acquired Distinctiveness, Disclaimer Required
• CAFC Reverses and Remands TTAB 2(d) Decision Due to Inadequate Appreciation of PEACE & LOVE

Recommended Reading:

• Latest Version of TTAB's "Advanced Practice Tips"
• Recommended Reading: Alexandra Bistline, Trademark LItigation After B&B v. Hargis"
• Recommended Reading: Ted Davis, Federal Registration and the Constitutional Right to Petition
• Recommended Reading: Peter Karol, "The Constitutional Limitation on Trademark Propertization"
• Recommended Reading: William McGeveran, "The Imaginary Trademark Parody Crisis (And The Real One)"

Other:

• TTABlogger Article: "The Top Ten TTAB Decisions of 2014-2015" - Plus 40% Discount on "The IP Book"
• TTAB Posts September 2015 Hearing Schedule
• Two TTAB Administrative Trademark Judges Appointed
• USPTO/TTAB Seek Comments on Proposed Revision of Standard Protective Order
• TTAB Posts August 2015 Hearing Schedule
• TTAB Posts July 2015 Hearing Schedule

Text and photos Copyright John L. Welch 2015.